Trade Marks, Geographical Indications, and the TPP

A number of trade mark issues have arisen during negotiations for the Trans Pacific Partnership Agreement (TPP). In this article we pick up on three of these issues, and explain what protections are available in New Zealand for non-traditional trade marks (such as trade marks for shapes, sounds and smells), well known marks and geographical indications.

What can be registered as a trade mark?

A sign may be registered as a trade mark if it is capable of being graphically represented, and capable of distinguishing the goods or services of one person from those of another person. The definition of “sign” includes brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word, and any combination of these – but is not restricted to these examples.[1]

Trade marks can be registered for goods and services. Certification trade marks and collective trade marks may also be registered.

A trade mark may be registered even if use is restricted or prohibited under the Smoke-free Environments Act 1990.[2]

Trade Marks and Geographical Indications

New Zealand has adopted a “first in time, first in right” approach to possible conflicts between trade marks and geographical indications.

At present geographical indications cannot be registered in New Zealand. There have been indications that the Geographical Indications (Wines and Spirits) Registration Act 2006 - which will provide for registration of geographical indications for wines and spirits - will come into force later this year. In the meantime, the Fair Trading Act and the common law action for passing off provide remedies if there is misleading use of a geographical indication, as do wine labelling laws[3].

Once the Geographical Indications (Wines and Spirits) Registration Act comes into force, the Trade Marks Act will also provide protection for registered geographical indications. A trade mark that contains a protected geographical indication must not be registered in respect of goods for which the geographical indication is registered. (In the case of wine, the prohibition will extend to a geographical indication where registration has been applied for in good faith.) This prohibition applies regardless of the place of origin of the goods for which the trade mark registration is sought.[4] Nothing in the Trade Marks Act will affect rights conferred under the Geographical Indications Wines and Spirits) Registration Act.[5]

The Geographical Indications (Wines and Spirits) Registration Act 2006 will prohibit registration of a geographical indication if it is:

identical to a trade mark registered in New Zealand for the identical goods or services[6];

identical to a trade mark for which registration has been sought in good faith in New Zealand, identical goods or services, and the priority date of the trade mark application is earlier than the date of the application for registration of the geographical indication[7];

identical to a trade mark and rights to the trade mark have been acquired through use in New Zealand in good faith in respect of identical goods or services[8];

identical to a trade mark registered in New Zealand for similar goods or services, where use of the geographical indication is likely to deceive or confuse[9];

identical to a trade mark for which registration has been sought in good faith in New Zealand, for similar goods or services, and the priority date of the trade mark application is earlier than the date of the application for registration of the geographical indication, where use of the geographical indication is likely to deceive or confuse[10];

identical to a trade mark and rights to the trade mark have been acquired through use in New Zealand in good faith in respect of similar goods or services, where use of the geographical indication is likely to deceive or confuse[11];

similar to a trade mark registered in New Zealand for identical or similar goods or services, where use of the geographical indication is likely to deceive or confuse[12];

similar to a trade mark for which registration has been sought in good faith in New Zealand, for identical or similar goods or services, and the priority date of the trade mark application is earlier than the date of the application for registration of the geographical indication, where use of the geographical indication is likely to deceive or confuse[13];

similar to a trade mark and rights to the trade mark have been acquired through use in New Zealand in good faith in respect of identical similar goods or services, where use of the geographical indication is likely to deceive or confuse[14].

The above restrictions will not apply, and a geographical indication that conflicts with a registered trade mark may be registered, if:

the trade mark owner consents; or

the Registrar considers that the geographical indication can coexist with the registered trade mark, after taking into consideration the history of use in good faith of the geographical indication in New Zealand, the recognition of the geographical indication in New Zealand, the rights of the trade mark owner (amongst other factors).[15]

Protection for Well Known Trade Marks

There is protection for well known trade marks in both the registration and the infringement provisions of the Trade Marks Act.

A trade mark must not be registered if it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand for the same goods or services; or for similar goods or services; or for any other goods or services if the use of trade mark for which registration is sought “would be taken as indicating a connection in the course of trade between those other goods or services and the owner of [the well known trade mark], and would be likely to prejudice the interests of the owner”.[16]

There is no requirement that the well-known trade mark must be registered in New Zealand, before it can form the basis of an objection to registration of a later trade mark. Its well known status may have been achieved “through advertising or otherwise”.[17]

If the well-known mark is registered, rights conferred by the registration are infringed by use of:

a sign identical to the well-known mark, for identical goods and/or services;

an identical sign for goods and/or services that are similar to those for which the well-known mark is registered – if use of the sign would be likely to deceive or confuse;

a sign which is similar to the well-known trade mark, for goods and/or services that are identical or similar to good and/or services of the well-known trade mark, if use of the sign would be likely to deceive or confuse;

a sign which is similar to the well-known trade mark, for goods and/or services that are not similar to the goods and/or services of the well-known mark, where use of the sign “takes unfair advantage of, or is detrimental to, the distinctive character and repute of the [well-known] mark”.[18]

If unauthorised use of a well-known mark is misleading or deceptive, the trade mark owner may also have remedies under the Fair Trading Act 1986 and for passing off.